P. O. Box 50191
Minneapolis, Minnesota 55405 USA
www.arbitration-forum.com
Youtv Inc.
COMPLAINANT,
vs.
Mr. Erkan Alemdar
RESPONDENT.
DECISION
Forum File No.: FA0003000094243
The above entitled matter came on for an administrative hearing on April 25, 2000 before the undersigned on the Complaint of Youtv Inc., hereinafter referred to as "Complainant", against Mr. Erkan Alemdar, hereinafter referred to as "Respondent". Complainant was represented by Candace Lynn Bell, Esq., Kavinoky & Cook, LLP, 120 Delaware Avenue, Buffalo, New York, 14202. Respondent was represented by Jonathan Capp, Esq., 585 East Pacific Coast Highway #63, Long Beach, California, 90804. Upon the written submitted record, the following DECISION is made:
PROCEDURAL FINDINGS
Domain Name: youtv.net
Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: Erkan Alemdar
Date of Domain Name Registration: February 9, 1999
Date Complaint Filed: March 1, 2000
Date of Commencement of Administrative Proceeding in Accordance with Rule
2(a) and Rule 4(c): March 7, 2000
Due date for a Response: March 30, 2000.
Response submitted: March 30, 2000.
After reviewing the Complaint, and determining it to be in administrative compliance, the National Arbitration Forum (The Forum) forwarded the Complaint to the Respondent on March 7, 2000 in compliance with 2(a), and the administrative proceeding was commenced pursuant to Rule 4©. In compliance with Rule 4(d), the Forum immediately notified Network Solutions, Inc., the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainant that the administrative proceeding had commenced. Respondent did submit a response to The Forum on March 30, 2000.
On February 9, 1999, Respondent registered the domain name "youtv.net" with Network Solutions, Inc., the entity that is the Registrar of the domain name. By registering its domain name with Network Solutions, Inc., Respondent agreed to resolve any dispute regarding its domain name through ICANN's Rules for Uniform Domain Name Dispute Resolution and the Uniform Domain Name Dispute Resolution Policy.
Any reference to "Rule" or "Rules" are to ICANN's Rules for Uniform Domain Name Dispute Resolution Policy and Uniform Domain Name Dispute Resolution Policy as supplemented by the National Arbitration Forum's Supplemental Rules to ICANN's Uniform Domain Resolution Policy.
FINDINGS OF FACT
The Complainant registered the mark YOUTV under Canadian Registration No. 762344 on May 3, 1996. This registration followed use of the mark from September 1, 1993 and was issued upon a filing that occurred August 24, 1994.
Complainant registered the mark YOUTV with a design with the United States Federal Registration under Registration No. 2,258,638 which registration was issued July 6, 1999. The first use of the mark had been September 1, 1993 and the filing date for Federal Registration was August 20, 1997.
Complainant has utilized its common law trademark and the servicemark rights in connection with providing goods and services for use on the web.
That use has included the following:
a. Interactive video messaging services;
b. Adaptation editing and media duplication of data and other digital information, including computer databases, video and audio recordings;
c. Editing services including the compiling of video and audio materials for television and video;
d. Adaptation, editing and media duplication of date and other digital information, including computer data bases, video and audio recordings on the internet as indicated on Complainant's website, "youtv.com"; and
e. Editing services including the compiling of video and audio materials for television and video on the internet.
Complainant's use of youtv marks has been in intracountry commerce and in international commerce between Canada and the United States and in worldwide commerce in connection with the advertising and offering for sale of Complainant's goods and services.
Complainant has invested substantial sums of money in developing and marketing its goods and services under and in association with the "youtv" marks.
Complainant has used the mark "YOUTV.COM" as a domain name for its website which was registered as of December 7, 1995 with Network Solutions, Inc.
"Youtv.net" is the registered domain name of the Respondent and is identical to Complainant's marks except for the addition of the designation ".net". Respondent's registration of the domain name "youtv.net" on February 9, 1999 occurred after Complainant had been using the "youtv" marks since September 1, 1993 and had obtained United States and Canadian registration for the mark. Complainant's domain name registration for the mark "YOUTV.COM" was effective December 7, 1995 and its web page under that domain name has been in existence from that time.
At the time of the filing of the Complaint, Respondent had not created an active website under "youtv.net" but posted a notice of a website under construction under that domain name. Thus as of the time of the filing of the Complaint, Respondent was not utilizing the domain name in connection with a bona fide offering of goods and services.
The evidence of record, including the Response to the Complaint leads to a finding that the true owner of the domain registration for "youtv.net" is a company called Intervizyon and not its sole owner, Alemdar, Erkan, as indicated in the Network Solutions registration documentation.
Complainant made efforts to contact Respondent regarding this dispute by letters dated October 14, 1999 and November 15, 1999. There is evidence of record that these letters were delivered, (Exhibit J and K to the Complaint).
On December 10, 1999 Complainant e-mailed Respondent regarding this dispute and on January 21, 2000 Respondent e-mailed a reply which advised the Complainant that the domain name should not present a big problem for Complainant as it already had its own youtv.com domain name. On that same day Complainant replied by e-mail advising the Respondent that they intended to go forward with the process for resolving the dispute.
In the January 21st e-mail Respondent provided domain names for websites showing other services provided by Intervizyon including TURKFM.COM and TURKMUSIC.COM which provide interactive audio recordings and video recordings and the nature of the goods and services provided is nearly identical to the type of audio and video recording goods and services Complainant provides under the youtv marks and on its website at YOUTV.COM.
Intervizyon had a website, TURKSEX.COM which was linked to it and could be linked through Intervizyon to youtv.net if that website were continued to be registered to Respondent and such could cause consumers of web services to believe that Complainant was associated with a web pornography site. After the filing of the Complaint the link with TURKSEX.COM was removed.
Following the filing of the Complaint, Respondent sent a Response dated 3-30-00 to National Arbitration Forum asserting that pursuant to Complaint notification instructions the last date for sending a Response was 3-30-00. The Response sent on that day did not actually constitute a Response but a request for an extension until April 14th for the purpose of filing a Response. The basis of the request was that Respondent had intended to utilize the services of law students of UC Berkley to prepare the Response, however, there was an allegation of unauthorized practice of law which led to the need to contact an additional attorney. Respondent alleges they contacted an attorney on March 27th but that attorney could not respond within the time parameters.
Complainant filed a letter requesting that the extension of time be denied on the basis that the Respondent did not set forth exceptional circumstances and does not meet the standard for extension set forth in the Rules.
Respondent filed an additional Response dated April 9, 2000 which was filed by Jonathan Capp, and which primarily consisted of a document entitled "Declaration of Erkan Alemdar". The Complainant filed a reply to the Respondent's Response asserting that it contained incorrect statements and misstated the disputed domain name as yourtv.net as opposed to youtv.net.
The arbitrator notes that the Rules provide in Rule 5(d) that, "at the request of the Respondent, the provider may, in exceptional cases, extend the period of time for the filing of the Response. The period may also be extended by written stipulation between the parties, provided the stipulation is approved by the provider."
The arbitrator finds that the provider did permit the filing of a response and did permit the filing of a reply to that response and the arbitrator has considered all of that material in rendering these findings of facts and conclusions.
CONCLUSIONS
The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following findings and conclusions.
1. Respondent has no legitimate interest in the domain name youtv.net. The domain name was not registered until after Complainant had obtained both Canadian and United States registration for a similar name and had utilized in the mark youtv for a significant period of time while Respondent has not used the domain name in connection with a bona fide offering of goods and services as of the date of the filing of the Complaint.
In addition, Respondent had visited Complainant's website prior to the registration and was aware of Complainant's website and marks that are on Complainant's website prior to the registration. Respondent's company was never known by the domain name youtv.net nor has there been any trademark registration for youtv.net or any similar name. Respondent's assertion that his web is aimed at the worldwide Turkish Community is not persuasive. There is no method to limit access to a website based on the ethnic origin or nationality of a user. Search engines will not designate domain names as being ethnically restricted.
2. Respondent has registered the domain name youtv.net in bad faith.
Respondent by posting the domain name has intentionally attempted to attract, for commercial gain, internet users to its website or other online locations, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of products or services on its proposed website location. Evidence of this is as follows:
a. The fact that Respondent had visited Complainant's website prior to registering the domain name;
b. The fact that the businesses of Complainant and Respondent are essentially similar. Respondent has acknowledged his websites are for commercial gain and the findings of facts support a determination that Respondent is intentionally attempting to attract users to his website using the youtv.net domain name for commercial gain. In addition the conclusion is buttressed by the fact that Respondent removed a link to a pornographic website and denies an intention to reactivate that link although if the domain name remains with the Respondent there is nothing to prevent that link from being re-established.
c. In addition it is the conclusion of the arbitrator that Respondent has registered the domain name in order to prevent the owner of the trademark or servicemark "youtv" from reflecting the mark in a corresponding domain name through a pattern of conduct which includes failing to respond to written inquiries from the Complainant regarding this dispute. Respondent alleges that he was unaware of these attempts to communicate from Complainant because he was not in the United States at the time the correspondence was sent. However, the e-mail which was sent to him by Complainant on 12-15-99 was not responded to until January 21, 2000 although in his reply, Responden t indicates that as soon as he received an e-mail December 15, he responded immediately. Certainly the gap between December 15 and January 21 is not immediate. In the response of January 21, 200 there was indication that the youtv trademark had been registered in Turkey when in fact Respondent in Mr. Alemdar's declaration acknowledges that it had not in fact been registered. The basis for his representation that it had was his assertion that he had instructed his employee to do so but unfortunately the employee had not done that.
d. Not naming the domain name registrant as Intervizyon when in fact the evidence indicates that Intervizyon is the owner of the domain name.
DECISION
Based upon the findings and conclusions, it is decided as follows:
THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME YOUTV.NET REGISTERED BY RESPONDENT, ERKAN ALEMDAR BE TRANSFERRED TO COMPLAINANT, YOUTV INC.
Dated: April 25, 2000, Edmund P. Karem, (Ret. Ky. Circuit Court Judge),
Arbitrator
______________________________
Honorable Edmund P. Karem